IPBiz

Intellectual property news affecting business and everyday life

Thursday, March 31, 2016

Dealing with an "attraction for theft"

From the CAFC decision in Clare v. Chrysler:

The ’795 and ’583 patents are directed to a hidden
storage compartment in the side of the bed of a pickup
truck. The specifications of the patents, which are identical
in relevant part, describe conventional methods for
altering the bed of a pickup truck to add storage space,
but these methods “alter the bed’s external appearance”
to give the pickup truck the “appearance of a utility bed”
with visible storage panels, handles, and locks. ’795
patent col. 1 ll. 20–40. The resulting modifications make
the pickup truck storage “an attraction for theft.” Id.
The ’795 and ’583 patents improve on the prior art by
adding storage to the bed of a pickup truck “without
altering the external appearance of the bed and without
significant reduction in the carrying capacity” of the bed.
Id. col. 1 ll. 41–44. In order to add storage space without
significantly reducing storage capacity, the storage area is
placed in the side of the bed “adjacent [to] the wheel well
area, and along the length of the bed.” Id. col. 1 ll. 45–50.
The external side panel of the truck is used to access the
storage area. Id.

The CAFC noted:

Determining literal infringement is a two-step process:
the “proper construction of the asserted claim and a
determination whether the claim as properly construed
reads on the accused product or method.” Georgia-Pac.
Corp. v. U.S. Gypsum Co., 195 F.3d 1322, 1330 (Fed. Cir.
1999). “[W]hen the district court reviews only evidence
intrinsic to the patent (the patent claims and specification[],
along with the patent’s prosecution history), the
judge’s determination will amount solely to a determination
of law, and the Court of Appeals will review that
construction de novo.” Teva Pharm. USA Inc. v. Sandoz,
Inc., ___ U.S. ___, 135 S. Ct. 831, 841 (2015) (italics omitted).

We conclude that the 1999 amendment to the Lanham
Act left the law where it existed before 1999—namely, it
left a conflict among the courts of appeals as to whether
willfulness was required for recovery of profits. We accordingly
follow the Second Circuit’s decision in George
Basch as reaffirmed in Merck. Under that standard, we
agree with the district court that Romag is not entitled to
recover Fossil’s profits, as Romag did not prove that Fossil
infringed willfully.

Tuesday, March 29, 2016

Evans observes "It's ok to steal"

About ten years ago, IPBiz recounted the story of the Harvard Business Review publishing an article including the text "plagiarize with pride" [See Harvard Business Review article: Plagiarize with Pride ]. One notes that one of the conclusions on innovation published in the Evans book [ They Made America; see point 3 in the image below ] is hauntingly similar:

**

**

The quote from Henry Ford in the Evans book is of interest in the context of Lemley's suggesting that anyone thought Ford "invented" the automobile and that Lemley was straightening us out on this point:

Think of the invention of the automobile, and it is hard to avoid thinking of Henry Ford. His mass-production model turned automobiles from individual, hand-crafted devices into mass-market products that we still recognize even today, such as the Model A and the Model T.

But Ford did not invent the automobile.

In contemplating invention, as distinct from innovation, it is important to understand what the invention is. Of the Wright Brothers, Lemley writes: "The airplane. Orville and Wilbur Wright, who ran a bicycle shop in Ohio, are known to the world as the inventors of the airplane. And they were indeed the first to fly a self-propelled heavier-than-air craft. But they did not operate in a vacuum." But the Wright Brothers' invention (and patent) was about three-dimensional control (not heavier than air flight), and the patent application was filed months BEFORE their December 1903 flight.

Similarly, Edison's invention related to the light bulb was of a high resistance, low current filament. Although Lemley writes -- Edison's particular inventive contribution was the discovery of a new filament - a particular species of bamboo - that worked better than Sawyer and Man's carbonized paper because it had a higher resistance to electricity and so turned more of the power routed through the bulb into light. Higher resistance was a useful contribution, though it is worth noting that Edison's core patent, U.S. Patent No. 223,898, was filed in a rush to beat known competitors to market and included elements like a spiral filament that he himself soon abandoned. -- In reality, Edison's US '898 was filed BEFORE Edison had even tried, much less succeeded with, the longer life bamboo filament. The invention was in teaching about high resistance.

Monday, March 28, 2016

Edison did not win the Congressional Medal of Honor

The [Congressional] Medal of Honor is the United States of America's highest military honor, awarded for personal acts of valor above and beyond the call of duty. Curiously, a number of websites (and books) credit Edison with receiving this award. For example, at charlesedison.org:

[Edison] could never get over being embarrassed when some new medal came his way. But one of his greatest honors was yet to come. On Oct. 20, 1928, he was awarded the Congressional Medal of Honor - the nation's highest award in recognition of services rendered.

link: http://www.charlesedisonfund.org/tomedisonbio/ch14.html

Conservapedia writes:

[Edison] developed a process for making synthetic carbolic acid, coal-tar products necessary for the manufacture of explosives, and many safety devices. He also served as head of the Navy Consulting Board. After the war Edison was awarded the Congressional Medal of Honor.

Accord: answers.com
and Linda J. Barth, "A History of Inventing in New Jersey"

This is incorrect. Edison did not win the [Congressional] Medal of Honor; he won the Congressional Gold Medal,
an award for civilians.

**As to the Congressional Gold Medal, from wikipedia:

A Congressional Gold Medal is an award bestowed by the United States Congress; the Congressional Gold Medal and the Presidential Medal of Freedom are the highest civilian awards in the United States. It is awarded to persons "who have performed an achievement that has an impact on American history and culture that is likely to be recognized as a major achievement in the recipient's field long after the achievement."

Saturday, March 26, 2016

Famous bad predictions. Noyce to Kildall: "the future is in digital watches, not in computer games."

The quote is taken from page 406 of the book by Harold Evans, They Made America Great. Little Brown, 2004.

The chapter on Kildall gives us another example of someone who functioned as a sole inventor (albeit with some help from collaborators, such as Jack Torode ).

As Evans writes: "He was the first person to realize that Intel's
microprocessors could be used to build...small personal computers."

Kildall wrote the first language for a microcomputer operating system and
the first floppy disk operating system before there was even a microcomputer,
months before there was an Apple, years before IBM launched a personal computer (page 402)

In 2013, Depomed sued Purdue in the United States
District Court for the District of New Jersey, alleging
infringement of the ’475 and ’280 patents. Purdue then
filed three petitions at the PTO requesting inter partes
review of the asserted claims on grounds that those
claims are unpatentable as, inter alia, obvious over
Baveja et al., Zero-Order Release Hydrophilic Matrix
Tablets of β-Adrenergic Blockers, 39 Int’l J. Pharmaceutics
39 (1987) (“Baveja”), U.S. Patent 5,582,837 (“Shell”), and
other references.

Reason to combine was at issue

the Board found that Purdue failed to establish a
reason to combine the prior art to achieve the claimed
invention with a reasonable expectation of success, Purdue
I, 2015 WL 4150832, at *16, *20; Purdue II, 2015 WL
4150833, at *15; Purdue III, 2015 WL 4150834, at *16.

Specifically, the Board found that, although Baveja
and Shell may have interrelated teachings, Purdue failed
to explain persuasively “how or why” a person of ordinary
skill in the art would have combined the “swelling” and
“substantially intact” features of the Shell formulation
with the Baveja formulation. Purdue I, 2015 WL
4150832, at *16; Purdue II, 2015 WL 4150833, at *15;
Purdue III, 2015 WL 4150834, at *16. The Board also
found that, to the extent that Purdue relied on the nature
of the problem to be solved to supply a reason to combine
the prior art, it improperly used hindsight by defining the
problem with a recitation of the challenged claims.

Purdue argues that the Board erred by deviating from
the Supreme Court’s guidance in KSR that an obviousness
analysis involves an expansive and flexible approach
that accounts for the interrelated teachings of the prior
art and the nature of the problem to be solved. Applied
here, Purdue contends, those principles necessarily
demonstrate how and why a skilled artisan would have
had a reason to combine the interrelated teachings of
Baveja and Shell, as both references teach similar controlled-release
profiles of similar formulations with overlapping
drug-to-polymer ratios. Purdue also argues that
the problem to be solved provides a further reason to
combine Baveja and Shell, for those references already
solved the problem by teaching the drug release profile
and other limitations of the challenged claims. Purdue
maintains that its definition of the problem to be solved
came directly from Shell, not from the challenged claims.

As to evidentiary standards:

As the petitioner before the Board in an
inter partes review proceeding, Purdue bore the burden of
establishing obviousness of the challenged claims by a
preponderance of the evidence. 35 U.S.C. § 316(e). The
Board did not err in finding that Purdue failed to satisfy
that burden.

AND

Although Baveja expresses a preference for
oral dosage forms that exhibit a zero-order release profile
over those that do not, that preference does not amount to
teaching away from dosages forms with a non-zero-order
release profile. See In re Mouttet, 686 F.3d 1322, 1334
(Fed. Cir. 2012) (“[J]ust because better alternatives exist
in the prior art does not mean that an inferior combination
is inapt for obviousness purposes.”).

Nevertheless, the Board correctly recognized that “a
patent . . . is not proved obvious merely by demonstrating
that each of its elements was, independently, known in
the prior art.” KSR, 550 U.S. at 418. Indeed, it remains
“important to identify a reason that would have prompted
a person of ordinary skill in the relevant field to combine
the elements in the way the claimed new invention does.”
Id. (emphases added). As the Board correctly recognized,
one may look to “interrelated teachings” of multiple
references, id., or a “problem known in the field of endeavor,”
id. at 420, to determine whether there was an
“apparent reason” to combine the prior art teachings “in
the fashion claimed by the patent at issue,” id. at 418.
Although the obviousness analysis may not be confined
by any formalistic test, or by overemphasis on the
explicit teachings of prior art publications, a petitioner
must nevertheless make a sufficient showing that is more
than “mere conclusory statements,” to establish a reason
that would have prompted a skilled artisan to combine
the prior art teachings in the way of the claimed invention.
Id. at 418–19. As we have explained, a patent
challenger must demonstrate that a skilled artisan would
have had reason to combine the teachings of the prior art
references to achieve the claimed invention, and that the
skilled artisan would have had a reasonable expectation
of success from doing so. See PAR Pharm., Inc. v. TWI
Pharm., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014).

Of "problem to be solved"

The Board
therefore did not err in finding that Purdue improperly
relied on hindsight in formulating the problem to be
solved. Insite Vision Inc. v. Sandoz, Inc., 783 F.3d 853,
859 (Fed. Cir. 2015) (“Defining the problem in terms of its
solution reveals improper hindsight in the selection of the
prior art relevant to obviousness.”).

Wednesday, March 23, 2016

"The Good Wife" does plagiarism on March 20, 2016

From time-to-time, IPBiz mentions legal aspects arising from the CBS show The Good Wife (e.g., http://ipbiz.blogspot.com/2016/02/neil-gross-character-on-good-wife-right.html). The episode "Shoot," airing on March 20, 2016 has engendered commentary about plagiarism, and obliquely the service known as "Turn-It-In" (although the fact pattern of alleged plagiarism from the Book of Matthew on a college admission essay needs to be studied). See https://www.insidehighered.com/quicktakes/2016/03/22/good-wife-plagiarism

IPBiz notes that quoting from the Bible (without attribution) was done by Abraham Lincoln in the "House Divided" speech.

**Text from the "Shoot" episode relevant to plagiarism theme:"Grace. Hi. Did you find out? Well, maybe it's a deferred admittance. (Whispers): College. Did you check the Web site? No, that's the thing. Mr. Ecklund, my guidance counselor, he called their admissions office. Mom, the admissions office thinks that I plagiarized my essay."

Oh, my God. Genuine Thought is a database with millions of essays. It helps schools identify possible plagiarism. Mr. Ecklund, have you read Grace's essay? I have. So then you know that this is intensely personal. Do you seriously think that other essays in that database contain the same family history? Mrs. Florrick, many students write about the challenges they've overcome. And while the specific facts may be unique, the lessons that applicants say they've learned from them aren't. I didn't plagiarize. Mr. Ecklund, could you tell us exactly what Grace is being accused of plagiarizing? I can't say. We-we weren't given that information.

All right, Genuine Thought... it's big business in the fight against student plagiarism. The software designers have acknowledged they're having problems with false positives, which is why the company has settled a few lawsuits last year. Wait, false positives how? It might tag a section as plagiarism when, in fact, it's just a phrase in common usage. For example, in one paper they flagged, "there's not enough money to go around," or "according to conventional wisdom" as plagiarized, when in fact they're just sort of clichés. Unoriginal, but not plagiarized. So, what do I do? Well, you need to find out what they're saying is plagiarized. They won't tell me... they say it breaks policy. They don't want more lawsuits. Okay.

What is my daughter accused of plagiarizing? Unfortunately, it is our college policy to not reveal the details of these decisions. You're worried about a lawsuit? We're worried about confidentiality. I'm a lawyer, ma'am. If there's anyone you should be worried about, it's a lawyer. And if there's anyone you should worry about not intimidating, it's a college admissions director. Well, good. I think that settles the matter. Why don't we... So here's the thing, Okay. we submitted my Grace's essay independently, to Genuine Thought, to find out what they considered plagiarism, and do you know what they flagged? "Do not take an oath by your head, for you cannot make one hair white or black." Again, I can not tell you. It's from the Sermon on the Mount. You're accusing my daughter of plagiarizing the Sermon on the... Mount. I can not confirm or deny. Do you seriously want to be sued for denying my daughter admittance because you can't tell the difference between the Sermon on the Mount within or without quotes? It was very nice meeting you, ma'am. Well, I think we should leave it at that.
-------

The copied text in question is Matthew 5:36 (ESV):
English Standard VersionAnd do not take an oath by your head, for you cannot make one hair white or black.
In context, this is a "last" example given by Jesus about oaths. The gist: The more evil a person is, the less the person will be bound by oaths; if a person is good, there is no need for them.

In passing, in full context of Matthew, an odd quote for an admissions essay. Is this a flashback to an earlier episode involving Grace? ["Here Comes the Judge;" "Snowball cheese?"]

CAFC addresses estoppel issues in IPRs in Shaw v. Automated Creel

This case touched on procedural matters in IPRs:

We can see benefit in the PTO having the ability to
institute IPR on only some of the claims and on only some
of the proposed grounds, particularly given the Board’s
statutory obligation to complete proceedings in a timely
and efficient manner. 35 U.S.C. § 316. For example, in
Liberty Mutual Insurance Co. v. Progressive Casualty
Insurance Co., No. CBM2012-00003, 2012 WL 9494791, at
*1 (P.T.A.B. Oct. 25, 2012), the petitioner presented over
four-hundred grounds of unpatentability for twenty
patent claims. The Board determined that “numerous
redundant grounds would place a significant burden on
the Patent Owner and the Board, and would cause unnecessary
delays.” Id. (...)

The Board made specific findings that certain
groups of grounds were redundant. It ordered the Petitioner
to choose which ground in each group to maintain,
and even explained which ground it would proceed with if
the Petitioner did not choose. The PTO has made similar
constraints in prosecution by requiring applicants to
narrow the number of claims they wish to prosecute. See,
e.g., Hyatt v. U.S. Patent & Trademark Office, 797 F.3d
1374, 1376 (Fed. Cir. 2015) (discussing the PTO’s requirement
that the patentee select some of the hundreds
of thousands of claims to prosecute, absent a showing that
more claims were necessary).

The importance of the word "during":

We agree with the
PTO that § 315(e) would not estop Shaw from bringing its
Payne-based arguments in either the PTO or the district
courts. Both parts of § 315(e) create estoppel for arguments
“on any ground that the petitioner raised or reasonably
could have raised during that inter partes
review.” Shaw raised its Payne-based ground in its
petition for IPR. But the PTO denied the petition as to
that ground, thus no IPR was instituted on that ground.
The IPR does not begin until it is instituted. See Cuozzo,
793 F.3d at 1272 (“IPRs proceed in two phases. In the
first phase, the PTO determines whether to institute IPR.
In the second phase, the Board conducts the IPR proceeding
and issues a final decision.” (citations omitted)).
Thus, Shaw did not raise—nor could it have reasonably
raised—the Payne-based ground during the IPR. The
plain language of the statute prohibits the application of
estoppel under these circumstances. In light of our construction
of the statute, mandamus is not warranted.
Thus, we deny Shaw’s petition for writ of mandamus.

CAFC rules on vacuum toilets used in airplanes; a coin is a tool

These appeals concern vacuum toilets, such as those
that are commonly found on commercial aircrafts. Plaintiff-
Appellant MAG Aerospace Industries, LLC (“MAG”)
sued B/E Aerospace (“B/E”), alleging infringement of U.S.
Patent Nos. 6,536,054 (“’054 patent”), 6,536,055 (“’055
patent”), and 6,353,942 (“’942 patent”) in the United
States District Court for the Central District of California.
The district court granted summary judgment of noninfringement
on all patents, from which MAG timely appeals.
The district court also ruled that the doctrine of
assignor estoppel barred B/E from arguing that the asserted
patents are invalid, and B/E cross-appeals from
that ruling. For the reasons stated below, we affirm the
district court’s rulings.

Each party appealed an aspect of the CD Cal decision:

MAG argues that the district court erred in granting
summary judgment of noninfringement of the asserted
patents. B/E argues that the district court erred in ruling
that it was barred from asserting invalidity under the
doctrine of assignor estoppel. We address each of these
arguments in turn.

As to noninfringement:

Thus, MAG contends that there is a genuine issue of
material fact as to whether B/E’s toilet bowls meet the
“toollessly” replaceable limitation of the ’054 patent.

MAG is incorrect. There is no dispute that B/E’s toilet
bowl is attached to its frame with two screw fasteners.
And the record evidence showed that to release the screws
and remove the bowl, some kind of tool is necessary. In
fact, MAG presented no evidence that the screw fasteners
could be turned using only one’s hands (e.g., using a
fingernail). Indeed, B/E points out that every fact witness
who was asked testified that a tool, such as a coin or a
screwdriver, is necessary to release the screws. The B/E
documents on which MAG relies do not create a genuine
issue of material fact on this point. Instead, as the district
court properly determined, those promotional and
non-technical documents were simply “using a definition
of ‘tools’ that excludes coins.”

Of assignor estoppel:

In addition to granting B/E’s motion for summary
judgment of noninfringement, the district court also
granted MAG’s motion for summary judgment of no
invalidity. B/E cross-appeals from that ruling, contending
that the district court improperly applied assignor estoppel
to bar it from asserting that the patents-in-suit are
invalid.

(...)

“Privity, like the doctrine of assignor estoppel itself, is
determined upon a balance of the equities.” Shamrock
Techs., Inc. v. Med. Sterilization, Inc., 903 F.2d 789, 793
(Fed. Cir. 1990). As we previously said in Shamrock
Technologies,
If an inventor assigns his invention to his employer
company A and leaves to join company B,
whether company B is in privity and thus bound
by the doctrine will depend on the equities dictated
by the relationship between the inventor and
company B in light of the act of infringement. The
closer that relationship, the more the equities will
favor applying the doctrine to company B.
Id. Here, one of the inventors of the patents-in-suit, Mark
Pondelick, now works for B/E. Mr. Pondelick assigned the
patents to his former employer, who in turn assigned
them to MAG. The district court concluded that Mr.
Pondelick was in privity with B/E and thus that assignor
estoppel applies to bar B/E from attacking the validity of
the patents. The district court did not clearly err in its
determination.

(...)

Based on the extent of
Mr. Pondelick’s involvement in the alleged infringing
activity and the fact that B/E “availed itself of [Mr. Pondelick’s]
knowledge and assistance” to conduct the alleged
infringement, Intel Corp. v. U.S. Int’l Trade Comm’n, 946
F.2d 821, 839 (Fed. Cir. 1991), we cannot say that the
district court abused its discretion in finding that assignor
estoppel applies. We therefore affirm the district court’s
ruling that B/E is barred under the doctrine of assignor
estoppel from arguing that the patents-in-suit are invalid.

Monday, March 21, 2016

Cree loses at CAFC on "white light emitter" LED patent 6,600,175

The decision of the Board in ex parte reexamination 90/010,940
of Cree’s U.S. Patent No. 6,600,175 was affirmed by the
CAFC. Cree loses.

The patent in suit, Cree’s U.S. Patent No. 6,600,175
(“the ’175 patent”), filed in 1996, is entitled “Solid State
White Light Emitter and Display Using Same.” The
claims at issue in this appeal are directed to the production
of white light through the “down-conversion” of blue
light from light-emitting diodes (“LEDs”). Downconversion
is the process in which high-energy (shorter
wavelength) light is absorbed by a material and then reemitted
as lower energy (longer wavelength) light. By
choosing the particular absorbing material, light at a
desired wavelength (and thus a desired color) can be
produced.

The examiner rejected six claims added during reexamination
of the ’175 patent as obvious under multiple
combinations of prior art references, including the combination
of U.S. Patent No. 3,691,482 (“Pinnow”), U.S.
Patent No. 3,819,974 (“Stevenson”), and U.S. Patent No.
5,578,839 (“Nakamura”).

Footnote 3:

Cree argues that the Board’s rejection was based
on “impermissible hindsight.” That argument, however,
is essentially a repackaging of the argument that there
was insufficient evidence of a motivation to combine the
references. It is fully answered by the Board’s observation
that “the weight of the evidence shows that the
proffered combination is merely a predictable use of prior
art elements according to their established functions.”

The topic of press releases arose:

Cree first points to two press releases from the
Fraunhoffer Institute and contends that those press
releases support the inference of non-obviousness. The
press releases describe the down-conversion of blue LED
light to produce white light as a “breakthrough” and an
“innovative idea.” The Board, however, found the press
releases unpersuasive as secondary evidence, because the
praise was directed to the Fraunhoffer Institute’s own
work, not the work of the inventors of the ’175 patent.
Cree faults the Board for discounting that evidence.
In Cree’s view, even though the press releases were
directed to the work of others, the praise for the concept
still had the requisite nexus to the claimed invention.
We agree with the Board’s treatment of this evidence.
While “praise in the industry for a patented invention,
and specifically praise from a competitor tends to ‘indicate
that the invention was not obvious,’” self-serving statements
from researchers about their own work do not have
the same reliability. Power-One v. Artesyn Techs., Inc.,
599 F.3d 1343, 1352 (Fed. Cir. 2010) (quoting Allen Archery,
Inc. v. Browning Mfg. Co., 819 F.2d 1087, 1092
(Fed. Cir. 1987)). The Board thus permissibly concluded
that the press releases were unpersuasive and, if anything,
showed that down-conversion was the logical next
step after the development of the Nakamura LED.

(...)

Additionally, the press releases indicate that some of
the licenses were broad cross-licenses (such as the licenses
to Nichia, Toyoda Gosei, Osram, and Phillips) or were
intended to resolve litigation (such as the license to
Nichia). Some of the press releases on which Cree relies
define the scope of the licensing transactions as “broad
and substantial,” “comprehensive [and] worldwide,” and
“cover[ing] patents from both parties in the fields of blue
LED chip technology, white LEDs and phosphors (including
remote phosphors), control systems, LED luminaries
and lamps as well as LED backlighting of liquid crystal
displays (LCDs) and patents in Phillips LED Luminaire
Licensing Program.” In light of the lack of specificity in
that evidence, it was reasonable for the Board to find that
the licenses were not shown to have a sufficient nexus to
the ’175 patent to require a finding of non-obviousness.

AND

In a portion of the examiner’s answer that was adopted
by the Board, the examiner found that the commercial
success of white LEDs “cannot be due to simply making a
single-die semiconductor LED that emits white light,”
because if that were so, “then the commercialization could
have started back in 1973.” Instead, the examiner found,
“it appears that Wetzel, Redwing, and Stringfellow all
acknowledge the invention of a GaN LED with sufficiently
high light output, somewhere in the UV to blue region of
the spectrum was the thing that made the down
converting device of Stevenson . . . commercial[ly] successful.”
Cree has failed to rebut the Board’s finding of a lack
of nexus between the invention and the commercial
success of white light LEDs. As the Board found, “the
record is completely silent on whether the commercial
success was caused by the subject matter of the ’175
patent as distinct from the prior art.” For that reason, we
sustain the Board’s conclusion that the evidence of commercial
success did not outweigh the strong prima facie
showing of obviousness.
We therefore uphold the Board’s decision rejecting the
disputed claims of the ’175 patent.

There are actually two cases. IPBiz is more interested in the
MS case involving Ampyra.

The bottom line:

The decisions of the district court that Mylan is
subject to specific personal jurisdiction in the district
court for Delaware are affirmed.

Some details:

Mylan moved to dismiss on the ground that Delaware could not
(and so the federal court may not) exercise personal
jurisdiction—either general or specific personal jurisdiction—
over Mylan in these cases. Chief Judge Stark and
Judge Sleet denied the motions. Although they reached
different conclusions about whether Delaware could
exercise general personal jurisdiction over Mylan based
on consent given in registering to do business in the State,
they both concluded that Delaware could exercise specific
personal jurisdiction, based on Mylan’s suit-related contacts
with Delaware. On interlocutory appeal, we affirm,
holding that Mylan is subject to specific personal jurisdiction
in these cases. We do not address the issue of general
personal jurisdiction.

This is a Hatch-Waxman case:

Under the authority of the FDA’s approval of its New
Drug Application (NDA), 21 U.S.C. § 355(a), (c), Acorda
markets Ampyra® to help individuals with multiple
sclerosis walk. In seeking approval for Ampyra®, Acorda
identified five patents for listing in the FDA’s Approved
Drug Products with Therapeutic Equivalence Evaluations
publication—the “Orange Book.” See 21 U.S.C.
§ 355(b)(1); 21 C.F.R. §§ 314.3, 314.53. Acorda owns four
of the patents and is the exclusive licensee of the fifth,
owned by Alkermes. In January 2014, Mylan filed an
Abbreviated New Drug Application (ANDA) with the FDA
under 21 U.S.C. § 355(j), seeking approval to market
generic versions of Ampyra®. Under paragraph IV of
§ 355(j)(2)(A)(vii), Mylan certified that Acorda’s Orange
Book patents for Ampyra® are invalid or would not be
infringed by Mylan’s marketing of its proposed drug.
Acorda and Alkermes then sued Mylan in the District of
Delaware for patent infringement, invoking the declaration
of 35 U.S.C. § 271(e)(2)(A) that the submission of a
paragraph IV certification constitutes an act of infringement.
1

The no apportionment language (i.e. disgorgement of infringer’s ‘total profits’) was placed in the Patent Act in 1887 in response to a 1886 U.S. Supreme Court case regarding infringement of a design patent on a carpet design, whereby the Court said the design patentee was only entitled to 6 cents in damages

Recall, as to patent history, the light bulb wars were going on in the 1880s. To get a flavor of sentiment in the year 1886,
one has a statement by E. H. Johnson, President of the Edison Electric Light Company:

"The fact that Mr. Edison invented the incandescent lamp in the form in which it is now presented by all electric light companies was so widely proclaimed by the publication thereof in every class of literature at the time of the invention, that it would seem very like an insult to the intelligence of the community to recall it. Indeed, a retrospective view of the history of the great invention is rendered unnecessary by the fact that even the infringing companies themselves do not dwell upon their claim to the ownership of original patents, but fortify their position by the assertion that Edison's patents are invalid and open to the public, and offer in corroboration of their statement the apparent apathy of the Edison Company in the matter of defending them."

Also, Edison's first design patent titled --Design for an incandescent electric lamp -- was to a light bulb design:

Heretofore the glass globes used to inclose the carbons of incandescent lamps have been made either of a spherical shape or in the form, when viewed in section, of an ellipse elongated at the ends.

The leading feature of my design consists of having the upper portion of the globe of the form (when viewed in section) of a semicircle and the lower part gradually tapering down to the bottom, where it is set into a socket. The

widest portion of the globe is from A to A, and the form of the globe above these points is a half-sphere, except when it is broken by the projection a, which is occasioned by the breaking olf of the stem of glass remaining after blowing the globe. Below the points A A the diameter of the globe becomes smaller until at the points B B. When it is set into the socket it is less than one-halfthe diameter A A. It will be seen that the globe is thus approximately pear-shaped.

What I claim is- The design for incandescent electric lamps herein described and shown.

Edison's key light bulb patent (223,898) was filed Nov. 4, 1879, a few weeks before the filing of the design patent.

**For a popular account of the cert decision, see USAToday:
http://www.usatoday.com/story/money/2016/03/21/supreme-court-weigh-samsung-apple-patent-battle/82070316/

** FossPatents had previously noted as to the Samsung getting cert:

The fact that Samsung's petition is certworthy has been confirmed by two recent posts on key IP blogs:

•The SCOTUSblog's Relist Watch:

"The big new relist this week is Samsung Electronics Co. v. Apple, 15-777, which we're guessing is being closely watched by the IP crowd."

That's a verys safe guess. Not sure this can even be described as a guess.

Sunday, March 20, 2016

Shaver on Edison's light bulb: "Scientifically speaking, his team’s discoveries were neither the first, nor the most important."

Lea Shaver's article in 69 Wash & Lee L. Rev. 1891 was not her first commentary on Edison and the light bulb.
For example, one has the 2010 post New light from an old source, which includes the text:

Contrary to popular wisdom, however, Edison’s team was merely one of dozens that co-invented electric light bulb.

Scientifically speaking, his team’s discoveries were neither the first, nor the most important.

What Edison did better than all the other inventors took place not in the laboratory, but in the law office.

His lawyers pursued, obtained, asserted, and litigated key patents on light bulb technology in order to run competing bulb manufacturers out of business or buy them (...)

It was at this point, in 1879, that Edison filed for his first patent on “an improvement in Electric Lamps and in the method of manufacturing the same.” The improvement Edison claimed was the use of a certain type of filament inside the bulb.

Edison then leveraged his monopoly on bulbs to corner the market in electricity service as well. Over a century later, General Electric is the longest-running member of the Dow Jones industrial average.

For example, Thomas Swan had light bulb patents of his own, the first predating Edison’s by 19 years. He had even been granted a patent in England claiming the same discovery Edison’s team claimed to have made.

But he was unable to retain the legal upper hand. Even though it was never legally established that Swan’s bulbs infringed on Edison’s patents, the shadow of IP law made it too risky for Swan to continue competing. The two companies merged.

In the process, competition in the light bulb market – and therefore the race to roll out improvements and cut prices – was severely curtailed. And a half century would pass before ordinary Americans could afford electric lights.

In theory, patents promote innovation by providing greater incentives to invention. But it can also work the other way, by erecting legal barriers to follow-on innovation.

and to a law review article [my article from the Wisconsin Law Review ] , which yields

Not Found

The requested URL /lawreview/ was not found on this server.
Apache/2.4.7 (Ubuntu) Server at hosted.law.wisc.edu Port 80

although the final link [http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1354788 ] does yield a result.

Footnote 8 of 69 Wash & Lee L. Rev. 1891 does reference Lea Shaver, The Right to Science and Culture, 2010 Wisc. L. Rev. 121, 122-28 for the proposition: Of course, patent protection can also be challenged on ethical grounds, including notions of human rights.

**Returning to the 2012 law review article, the introduction does assert

This Article sheds light on the role that patent law played in the light bulb's emergence. The story told here is not a conventional tale of great inventors, bright ideas, and the inevitable march of scientific progress. It is a story of corporate maneuvering and high-stakes litigation, as Thomas Edison and [p. 1894] his competitors employed patents as weapons in their battle to dominate the electrical industry. Although famous for his workshop talents, Edison would be better understood as an early Bill Gates, his business success built on a keen appreciation of the power of aggressive intellectual property strategy and the frailty of antitrust law. n3

Of the patent interference:

Between 1880 and 1883, the competitors were embroiled in a hard-fought priority battle at the U.S. patent office over which team had been first to achieve a key insight. n89 The dispute went against Edison, and the issuance of the Sawyer and Man patent in 1885- along with Westinghouse's entry in the industry-set the stage for a decade of extensive and expensive litigation. n90

Keeping in mind that Edison was basically forced out of GE by J.P. Morgan, the following text is curious:

By 1897, General Electric was the undisputed leader, and Westinghouse was its only serious rival. n152 The two companies agreed to a truce in the form of patent cross-licensing and product pricing agreements. n153 Smaller competitors were invited to join [*1931] the Incandescent Lamp Manufacturers Association, organized by General Electric. These members agreed to divide up the markets and avoid price competition. n154 The result was that G.E. sold half of the bulbs in the U.S. market, and the smaller companies divided the other half. n155 These smaller companies, dependent on G.E. patent licenses for their existence, put no downward pressure on prices and were discouraged from contributing their full potential to next-generation innovation. n156 In Bright's words: "They gave only the appearance of competition." n157 Through incorporation, patent litigation, licensing deals, and eventually purchases of stock, by 1910, G.E. controlled 97% of the market. n158 Only then could Edison finally rest, his empire secure.

In 1910, Edison had no light bulb empire.

The 2012 law review article does not seem to re-visit the 2010 text:

Scientifically speaking, his team’s discoveries were neither the first, nor the most important.

as to whose discoveries were the most important. Shaver does mention the most important patent [But in U.S. litigation one of Edison's many patents on the light bulb would ultimately play the most important role. Issued on January 27, 1880, U.S. Patent No. 223,898 ('898 Patent) recognized Thomas Alva Edison's "improvement in electric lamps," including a claim on "[a]n electric lamp for giving light by incandescence, consisting of a filament of carbon of high resistance, made as described, and secured to metallic wires, as set forth." n145 ]

n81 See Charles Bazerman, The Languages of Edison's Light 247 (1999) ("[I]n the 15 years before Edison was granted his first patent for incandescent light, 31 patents had already been granted in that area . . . ." (citing Robert E. Conot, A Streak of Luck 214 (1979))).

n88 See generally Bazerman, supra note 81, at 247-49 (describing Edison's practice of resolving conflicting patent claims over the incandescent light by combining forces with the businesses holding competing patents, but noting that this was not successful universally, and the Sawyer Man competition was particularly vexing).

n89 See id. at 248-57 (detailing the patent interference proceedings and later litigation between the Edison and Sawyer-Man teams).

The interference related to Sawyer-Man US 317676 with claims:

We claim as our joint invention-

1. An incandescing conductor for an electric lamp, of carbonized fibrous or textile material and of an arch or horseshoe shape, substantially as hereinbefore set forth.

2. The combination, substantially as hereinbefore set forth, of an electric circuit and an incandescing conductor of carbonized fibrous material, included in and forming part of said circuit, and atransparent hermetically-sealed chamber in which the conductor is inclosed.

3. The incandescing conductor for an electric lamp, formed of carbonized paper, substantially as described.

4. An incandescin electric lamp consisting of the following elements in combination first, an illuminating-chamber made whollyof glass hermetically sealed. and out of which all carbon'consuming gas has been exhausted or driven; second, an electric-circuit conductor passing through the glass wall of said chamber and hermetically sealed therein, as described; third, an illuminating conductor in said circuit, and forming part thereof within said chamber, consisting of carbon made from a fibrous or textile material, having the form of an arch or loop, substantially as described, for the purpose specified.

In testimony whereof we have hereunto subscribed our names this 8th day of January, 1880.

Note this was filed AFTER Edison's application leading to 223,898.

Note also that interferences are about PRIORITY not about validity, as we see in the recent order in the CRISPR case and as was evident in the case of the Sawyer-Man patent at issue in the 1880-1890 time period.

Early incandescent lamps did not use thin filaments, relying [p. 1550] instead on a thick incandescent conductor. n38 [See U.S. Patent No. 317,676 fig.3 (filed Jan. 9, 1880). ] Edison's main contribution to incandescent lighting was the discovery that a thin, high-resistance filament provided better light than the thick, low-resistance burner employed by researchers like Sawyer and Man. n39

Research centered on finding a material for the incandescent conductor that was not quickly consumed by the current passing through it. n40 Before 1880, hard mineral carbons seemed the most promising. n41 Those carbons burned slowly in open air, n42 but disintegrated quickly when a current passed through them. n43 Sawyer and Man claimed that they discovered that incandescent lamps could use carbonized fibrous or textile material as opposed to hard mineral carbon. n44 Edison argued he had made that discovery. n45

Sawyer and Man's narrowest claim in their patent was to an "incandescing conductor for an electric lamp, formed of carbonized paper." n46 [U.S. Patent No. 317,676 claim 3 (filed Jan. 9, 1880). ] Later, the Supreme Court would recognize that the paper claim was likely valid. n47 However, that claim would have been commercially worthless - few, if any, commercially successful lamps used a carbonized paper incandescent conductor. n48 To capture Edison's commercially successful lamp within the scope of their claims, Sawyer and Man had to rely on their broader claim to an "incandescing conductor for an electric lamp, of carbonized fibrous or textile material and of an arch or horseshoe shape." n49 If Sawyer and Man's broader claim was valid, they could control the entire electrical lighting industry - approximately twenty-four million bulbs per year. n50 At the time, there were no successful alternatives [*1551] to carbonized fibrous material incandescent conductors. n51 The outcome of the case, then, would effectively determine who controlled the electric lighting industry in the United States.

C. The Case

Perhaps because of the case's importance, the Supreme Court itself re-captioned the case as The Incandescent Lamp Patent. n52 In the court below, the case was captioned Consolidated Electric Light Co. v. McKeesport Light Co. n53 That caption tended to obscure the real parties in interest. Consolidated Electric Company, the plaintiff suing on the basis of the broad Sawyer and Man patent, was a subsidiary owned by George Westinghouse. n54 The McKeesport Company, the nominal defendant, really represented Edison's interest. n55 McKeesport used light bulbs from Edison Electric, and Edison agreed to indemnify McKeesport in litigation. n56

This case was the culmination of fifteen years of litigation between Edison and Westinghouse. n57 At the U.S. Patent Office, Edison attempted to claim that he had invented a lamp using fibrous vegetable material - the very thing that he later argued it was not proper to patent in Incandescent Lamp. Once litigation began, Edison attempted to delay Sawyer and Man's patent for as long as possible. n58 As will be explained later, this delay strengthened Edison's case at the Supreme Court.

Justice Bradley, a Supreme Court Justice riding circuit, decided the Western District of Pennsylvania case that led to the Incandescent Lamp decision. n59 However, Bradley did not decide the case on enablement grounds. Instead, Bradley found that the prior art invalidated the patent - that what Sawyer and Man had done was not new, or even if it [p. 1552] was new, that there was no "invention" because of what previous inventors had done before. n60

[p. 1554]

So the Court laid down a clear test for determining whether the description was sufficient: "If the description [of the invention] be so vague and uncertain that no one can tell, except by independent experiments, how to construct the patented device, the patent is void." n77

B. Analysis

In fashioning a test that obviated the need for experimentation, the Court attempted to reconcile what Sawyer and Man claimed in their patent with what they actually invented. After Incandescent Lamp, the Court allows broad claims but shows concern about preempting fields of research. n78 A patent preempting research into a certain field prevents innovation in that field for the term of the patent. Before the Court allows that preemption, it requires inventors to show that they have achieved the best result within that field. Simply recognizing that a field has promise is not an invention; invention is finding a real solution to a real problem. The Court determines whether the patent presents a real solution by asking whether the patent description answers the problem or merely makes a suggestion for others to investigate "by independent experiments." n79

Note also footnote 68, confirming that NOT all claims were invalidated [ The Court seemed to accept only the claim to carbonized paper as valid. See id. ] Edison did not infringe this claim because he did not use carbonized paper; that is why the loss of the interference was not significant.

With an effective vacuum pump available, several inventors soon produced working lamps. In August 1881, four of them—Thomas Edison and Hiram Maxim from the United States and Joseph Swan and St. George Lane Fox-Pitt from England—displayed their bulbs in Paris at the International Exposition of Electricity, which was attended by almost a million people. The lamps differed mainly in the choice of the material that was charred in a furnace to create the carbon filament. Edison began with bamboo fiber, Swan with cotton, Maxim with paper, and Fox-Pitt with grass. The Exposition Jury measured the efficiency of the various lamps, expressing that efficiency as candlepower—the light generated by a typical wax candle—per horsepower required to produce it. Edison's lamps ranked as the most efficient, giving 196 candlepower of light per horsepower applied to the generator. Maxim's gave 151, and the other two scored in between. The jury didn't consider how long each lamp lasted, and at that time it wasn't generally appreciated that the life of a filament lamp and its efficiency are interchangeable.

(...)

Before it could flourish, electric lighting had to defeat an entrenched competitor in many towns—gas. In the mid- and late 19th century, gaslight simply meant a bare gas flame, so the electric lamp, which produced no smoke, was a clear winner. But the gas industry didn't give up easily; it developed the gas mantle during the 1880s, then greatly improved it in the 1890s. This fine mesh, made mainly of thorium oxide, became incandescent when heated by a gas flame smaller than what had been used in previous generations of gas lamps. This technology also allowed the industry to change the composition of its gas so that the flames produced more heat and less light—and less smoke. The gas mantle turned out to be a cheaper source of light than the carbon filament lamp. Score round one to gas.

Starting around 1899, electricity answered the gas mantle with the metal filament, which could be operated at a hotter temperature, and therefore more efficiently, than a carbon filament.

(...)

In early tungsten lamps, the filaments sat in near vacuums, but it turned out that a little nitrogen or argon reduced the evaporation of the metal and prolonged the filament's life. The problem was that the gas also cooled the filament, making the lamp less efficient.

(...)

In 1959, General Electric (U.S.) refined the filament lamp one more time. Its researchers sealed a tungsten filament into a compact bulb containing an inert gas and a small amount of a halogen, usually iodine or bromine.

(...)

In a halogen bulb, the halogen gas combines with the minute particles of tungsten that evaporate from the filament, which in ordinary incandescent lamps are deposited mostly on the inner surface of the bulb and over time gradually dim the light output. The tungsten halide that forms moves around as a gas and then, when it nears the hot filament, breaks down, redepositing the tungsten back onto the filament and releasing the halogen to repeat the process.

CBS Sunday Morning on March 20, 2016

Mo Rocca hosted "CBS Sunday Morning" on March 20, while Charles Osgood recovers from knee surgery.
Rocca launched right into the cover story by Erin Moriarty about Gawker, featuring the recent
jury award to Hulk Hogan. Second was Lee Cowan on Gwen Stefani. Third Conor Knighton on Everglades
National Park. Fourth, Rita Braver on Steve Martin and Edie Brickell and "Bright Star." Fifth,
Jim Axelrod on artist Norman Lewis.

The headlines were Obama in Cuba. Freginals, Spain. 737 crash in Russia. Earth Home.
March Madness. Bald eagles in DC zoo. Weather: snow in northeast.
,
The story by Erin Moriarty was titled "Testing the Limits," and related to Gawker founder
Nick Denton, who stated gossip is that version of the news that authorities don't want us to
know. The piece included the Trump business about better to spend one day as a lion than 100
as a sheep (Mussolini). Denton mentioned that an outcast might be more willing to publish
this material because the outcast would care less about being accepted by the establishment.
There was a video shot at Gawker central showing live output of the number of views for the top
stories. A good story would get at least 1 million views. The Hogan story got 8 million views.
There was a video of Denton with Clarence Washington. Denton will be turning 50.
The pulling of the story on the Conde Nast CFO was mentioned; Denton mentioned journalists must
make judgment calls all the time. A view of headline: Hogan's Zeroes. The Moriarty piece
did not address points of law on libel.

Almanac was on March 20, 1981, the day Jean Harris was sentenced for the March 10, 1980 murder.
Harris was compared to Madame Bovary. Mario Cuomo commuted her sentence in 1992 and Harris
died December 23, 2012.

Jim Axelrod did a piece on artist Norman Lewis. Nigel Freeman. Show at Pennsylvania
Academy of Fine Arts. Lewis was born in 1909. Painting titled "Yellow Hat."
Former basketball player Darrell Walker was interviewed as a collector of Lewis.

Rita Braver did a piece on Steve Martin and Edie Brickell (married to Paul Simon).

Mo Rocca did a piece on the CBS production studio, wherein "Sunday Morning" has been made for 37 years.
Studio 45 was used for "Captain Kangaroo." The studio was previously a milk distribution center; CBS
moved in in 1964. Studio 41 was for "As the World Turns." Studio 43 is for CBS Sports, and there
was a clip with the basketball folks, including Charles Barkley (who picked Michigan State to win the NCAA tournament.)

Conor Knighton did a piece on Everglades National Park, created in 1947.

Nat Gallagher did an opinion piece on the anniversary of the Iraq invasion (13 years). He mentioned war is a narcotic
involving other people's sons and daughters. And asked
what if it was your son or daughter? He spoke of a divide.

One might ask "why" a person should NOT -- treat judicial opinions and patent claims as reliable evidence of who really did what --

The body of Shaver's law review mentions the word "resistance" only once:

As companies in the field of incandescent light technology negotiated cross- licensing deals and takeovers, patents on many aspects of the electrical lighting system played important roles. n144 But in U.S. litigation one of Edison's many patents on the light bulb would ultimately play the most important role. Issued on January 27, 1880, U.S. Patent No. 223,898 ('898 Patent) recognized Thomas Alva Edison's "improvement in electric lamps," including a claim on "[a]n electric lamp for giving light by incandescence, consisting of a filament of carbon of high resistance, made as described, and secured to metallic wires, as set forth." n145 The '898 Patent was just one among dozens of patents that Edison sought on the light bulb technology, and it was not initially clear that it would prove so central. n146 Competitors in the industry strongly doubted the validity of its claims. n147 That changed crucially when a Pennsylvania court, in the course of invalidating a rival patent held by Sawyer and Man, and in dicta, gave Edison's '898 Patent a new interpretation so broad as to render virtually every incandescent light bulb infringing. n148 Subsequent litigation produced a stunning consolidation of the previously very competitive American electric industry. n149 After the Supreme [p. 1930] Court's 1895 decision, all U.S. producers either purchased licenses from General Electric or merged with it. n150

In the law review, Shaver does NOT state, imply, or suggest that Edison's competitors came up with, or recognized, the value of a high resistance light bulb filament. Were other workers talking about "light bulbs"? Yes. Did they make the significant step forward to make light bulbs an innovation? No.

As to the relationship of this to Lemley's "Myth of the Sole Inventor," one first notes that Edison was not in any way a "sole inventor" in 1878 or 1880. Second, as to "who" thinks Edison was a "sole" inventor, other than certain law professors, one suspects myths perpetrated in newspapers and movies and other mass media, all of which are generally considered NOT to provide -- reliable evidence of who really did what -- One need only look to a sarcastic comment
in the "Silence of the Slams" episode of GRIMM on March 18, 2016: "And the newspapers say so, so it must be true."

As to the value of experts, one need go no further than experts opining on Michigan State's future in the NCAA basketball tournament of 2016:

Kansas is America's favorite, but experts like Michigan State to win NCAA tournament
Link: http://m.startribune.com/kansas-is-america-s-favorite-experts-like-michigan-state-to-win-ncaa-tournament/372396571/

**Some footnotes from Shaver law review article:

n146 See Bazerman, supra note 81, at 86-89 (explaining that, despite the large number of Edison patents, only the '898 Patent was deemed "crucial").

n148 See Consol. Elec. Light Co. v. McKeesport Light Co., 40 F. 21 (C.C.W.D. Pa. 1889), aff'd, 159 U.S. 465 (1895) (invalidating the Sawyer-Man Patent); Passer, The Electrical Manufacturers, supra note 42, at 155 ("The meaning of the decision seemed to be that the Edison patent could be the basis for an absolute monopoly of incandescent-lamp manufacture in the United States."); see also Bazerman, supra note 81, at 250-57 (offering an insightful account of the McKeesport trial).

The basic filament patent granted to Thomas Edison that was at issue in much litigation, was No 223,898, dated Jan 27, 1880. Ordinarily such a patent would have been in effect for 17 years but a ruling existed which stated that a patent would expire at an earlier time if a foreign patent on the same invention were to expire before the normal period of 17 years passed. As it happened, a similar patent was granted in Canada on Nov 19, 1879; that patent expired Nov 19, 1894. The Edison U.S. patent No 223,898 therefore expired on that same date, Nov 19, 1894.

One notes that the Westinghouse "stopper" bulbs, which lit the Columbian Exhibition in Chicago in 1893, were used while Edison's
'898 patent was in force.

The frognet post also observes:

It was after the formation of the General Electric Company in 1892, when the Thomson-Houston Electric Company joined forces with the Edison General Electric Company, that courtroom activity increased significantly. For example, legal proceedings had been initiated against the Mather, Perkins, Sunbeam, Germania, Boston Incandescent Lamp and Sawyer-Man companies.

Thomas Edison had little activity with General Electric, having been "patent-jacked" by J. P. Morgan. And, the significant
patent litigation activity was at the end of life of the '898 patent.

Developments in the CRISPR patent interference: the March 2016 order sets out which motions may proceed

Handicappers had previously laid odds in favor of the University of California, partly because the onus is on the Broad Institute, as the so-called junior party, to demonstrate that the patent office’s original decision awarding it key CRISPR patents was correct. But from the tea leaves offered by the judges’ rulings on which motions can be filed, the odds have shifted toward the Broad.

** There is a bit of an error in Begley's text

The Broad is also making one crucial argument: that UC’s claims are unpatentable because they overreach what Doudna actually accomplished.

IPBiz notes that the issue going forward in the interference is Doudna's "written description," which is NOT synonymous with what Doudna "actually accomplished." Further, "enablement" of Doudna's work is not presently on the table in the interference [proposed motion 48 on enablement was deferred.]

To see the distinction, note what the CAFC set out in the 2014 case of Alcon v. Barr: It is well settled that an invention may be patented before it is actually reduced to practice. Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 61, 119 S. Ct. 304, 142 L. Ed. 2d 261 (1998). Similarly, a patentee is not required to provide actual working examples; we have rejected enablement challenges based on the theory that there can be no guarantee that prophetic examples actually work, as "[t]he burden is on one challenging validity [p. 1190] to show by clear and convincing evidence that the prophetic examples together with other parts of the specification are not enabling." Atlas Powder Co. v. E.I. du Pont de Nemours & Co., 750 F.2d 1569, 1577 (Fed. Cir. 1984).

As set out in the March 2016 order, the motion of Broad/Zhang that may proceed in the interference pertains to "written description," rather than "enablement." This was in Broad's proposed motion 47, which becomes substantive motion 4. [Order p.6, lines 13-17: That is, if the motion is granted, judgment may be entered against UC because it might lack standing in the interference. See 37 14 C.F.R. § 41.201 (definition of threshold issue, wherein a threshold issue may be “[i]n the case of an involved application claim first made after . . . issuance of the movant’s patent . . . .”) ]

The Alcon court discussed "written description":

"[T]he hallmark of written description is disclosure." Ariad, 598 F.3d at 1351. The standard for satisfying the written description requirement is whether the disclosure "allow[s] one skilled in the art to visualize or recognize the identity of the subject matter purportedly described." Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 968 (Fed. Cir. 2002). There is no requirement that the disclosure contain "either examples or an actual reduction to practice"; rather, the critical inquiry is whether the patentee has provided a description that "in a definite way identifies the claimed invention" in sufficient detail that a person of ordinary skill would understand [p. 1191] that the inventor was in possession of it at the time of filing. Ariad, 598 F.3d at 1350, 1352; Koito Mfg. Co. v. Turn-Key-Tech., LLC, 381 F.3d 1142, 1154 (Fed. Cir. 2004). That assessment [p. 1016] "requires an objective inquiry into the four corners of the specification." Ariad, 598 F.3d at 1351.

The March 2016 order sent this message to UC/Doudbna:

Though UC characterized this motion as threshold, it relates only to whether Broad’s claims are unpatentable over the prior art, not whether Broad has standing in the interference. Whether Broad’s claims are unpatentable over prior art is not dispositive of issues of priority. The interference may proceed to determine if UC was not the first to invent the common subject matter under 35 U.S.C. § 102(g) even if Broad’s claims were held not to be patentable. Because UC suggested the interference it chose to challenge Broad’s claims in a priority contest instead of through another procedure. UC has not provided a sufficient reason why its prior art challenge to Broad’s claims should preempt the priority contest

The March 2016 order includes the text:

Additionally, priority proofs need not establish invention of the full scope of the claimed subject matter. Proof of a sole embodiment meeting all the limitations of the count is sufficient. Therefore, whether or not the UC disclosure enables the full scope of its claims, is not necessarily informative of whether UC can provide proof of invention of an embodiment within the scope of the count

Azure cannot have it both ways. If the term "MAC address" is properly construed to refer only to addresses assigned to peripheral devices by a hub device, then the accused products do not infringe. If, on the other hand, the [***1831] term is broadly and unreasonably expanded to cover addresses assigned at the time of manufacture, then the asserted claims are invalid. See MagSil, 687 F.3d at 1381 ("[A] patentee chooses broad claim language at the peril of losing any claim that cannot be enabled across its full scope of coverage."); Liebel—Flarsheim Co. v. Medrad, Inc., 481 F.3d 1371, 1380 (Fed. Cir. 2007) ("The irony of this situation is that [the patentee] successfully pressed to have its claims include a jacketless system, but, having won that battle, it then had to show that such a claim was fully enabled, a challenge it could not meet.").

A patent's specification must describe the invention and "the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains . . . to make and use the same." 35 U.S.C. § 112(a). "To be enabling, the specification of a patent must teach those skilled in the art how to make and use the full scope of the claimed invention without undue experimentation." MagSil Corp. v. Hitachi Global Storage Techs., Inc., 687 F.3d 1377, 1380 (Fed. Cir. 2012) (internal quotation marks omitted). Enablement is a question [p. 1661] of law that we review without deference, based on underlying factual inquiries that we review for clear error after a bench trial. Cephalon, Inc. v. Watson Pharms., Inc., 707 F.3d 1330, 1336 (Fed. Cir. 2013).

By choosing such broad claim language, Convolve put itself "at the peril of losing any claim that cannot be enabled across its full scope of coverage." Magsil Corp. v. Hitachi Global Storage, Techs., Inc., 687 F.3d 1377, 1381 (Fed. Cir. 2012). Dr. Singer's testimony that his later advancement allowed him to figure out why the '635 patent method was not working for disk drives is a strong indication that the patent was not enabling when it was filed. Indeed, HN16Go to this Headnote in the case."[t]he enablement doctrine's prevention of over broad claims ensures that the patent system preserves necessary incentives for follow-on or improvement inventions." Id. at 1384. Here, the inventor himself concedes that he was unable to fully [**58] implement the claimed method in disk drives for nine (9) years after the filing date. As such, we affirm the district [*932] court's finding of invalidity regarding claims 1-4 and 7 of the '635 patent.

Claims are not enabled when, at the effective filing date of the patent, one of ordinary skill in the art could not practice their full scope without undue experimentation. MagSil Corp. v. Hitachi Global Storage Techs., Inc., 687 F.3d 1377, 1380-81 (Fed. Cir. 2012). Enablement is a question of law based on underlying facts. Id.

-->enablement
In light of those disclosures, the district court's nonenablement ruling was premised on testimony that many "variables" including the number of prostaglandins and the range of PECOs encompassed by the claims, as well as "[v]arious parameters including pH, buffer, buffer concentration, preservatives, chelating agents, and other excipients may affect the chemical stability of prostaglandins in ophthalmic formulations." Alcon, 837 F. Supp. 2d at 382-83 (emphasis added). Indeed, Barr's expert observed that "when 'you have a lot of variables on top of one another, the experimentation gets out of control quickly.'" Id. at 383 (citing J.A. 6009). But such an unsubstantiated conclusory statement is not sufficient. Cephalon, Inc. v. Watson Pharms.., 707 F.3d 1330, 1339 (Fed. Cir. 2013). Barr adduced no evidence at trial that changing any of the "variables" or "[v]arious parameters" identified by the district court would render Alcon's claimed invention inoperable, nor was there any evidence that experimenting with those variables was required for an ordinarily skilled artisan to be capable of increasing the chemical [**20] stability of a prostaglandin by adding PECO. Adjusting variables may be relevant to optimizing the stability of a given prostaglandin composition, [***1015] but Barr proffered no evidence that any experimentation, let alone undue experimentation, with those variables would be necessary in order to practice the claimed invention. Without that evidence, there is no foundation for the district court's nonenablement ruling.

Furthermore, HN8Go to this Headnote in the case.a patent does not need to guarantee that the invention works for a claim to be enabled. It is well settled that an invention may be patented before it is actually reduced to practice. Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 61, 119 S. Ct. 304, 142 L. Ed. 2d 261 (1998). Similarly, a patentee is not required to provide actual working examples; we have rejected enablement challenges based on the theory that there can be no guarantee that prophetic examples actually work, as "[t]he burden is on one challenging validity [p. 1190] to show by clear and convincing evidence that the prophetic examples together with other parts of the specification are not enabling." Atlas Powder Co. v. E.I. du Pont de Nemours & Co., 750 F.2d 1569, 1577 (Fed. Cir. 1984). Nor is it "a requirement of patentability that an inventor correctly set forth, or even know, how or why the invention works." Newman v. Quigg, 877 F.2d 1575, 1581-82 (Fed. Cir. 1989) (citing Diamond Rubber Co. v. Consol. Rubber Tire Co., 220 U.S. 428, 435-36, 31 S. Ct. 444, 55 L. Ed. 527, 1911 Dec. Comm'r Pat. 538 (1911)). Thus, it is likewise irrelevant here, as a legal matter, whether the '287 and '062 patents contain data proving that PECOs enhance the chemical stability of prostaglandins.

Accordingly, because Barr did not show that any claimed embodiments would be inoperable and that a person of ordinary skill in the art would have been unable to practice the asserted claims without resorting to any experimentation, let alone undue experimentation, we conclude that the district court erred as a matter of law in holding that Barr proved its invalidity case based on nonenablement by clear and convincing evidence. Barr had the burden of proof to show that Alcon's patents lacked enabling disclosures, but failed to carry that burden. We therefore reverse the district court's judgment that claim 12 of the '287 patent and claim 19 of the '062 patent are invalid for lack of enablement.

-->written description
We agree with Alcon that the specifications provide an adequate written description of the claimed invention. "[T]he hallmark of written description is disclosure." Ariad, 598 F.3d at 1351. The standard for satisfying the written description requirement is whether the disclosure "allow[s] one skilled in the art to visualize or recognize the identity of the subject matter purportedly described." Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 968 (Fed. Cir. 2002). There is no requirement that the disclosure contain "either examples or an actual reduction to practice"; rather, the critical inquiry is whether the patentee has provided a description that "in a definite way identifies the claimed invention" in sufficient detail that a person of ordinary skill would understand [p. 1191] that the inventor was in possession of it at the time of filing. Ariad, 598 F.3d at 1350, 1352; Koito Mfg. Co. v. Turn-Key-Tech., LLC, 381 F.3d 1142, 1154 (Fed. Cir. 2004). That assessment [p. 1016] "requires an objective inquiry into the four corners of the specification." Ariad, 598 F.3d at 1351.

The '287 patent details the claimed invention and provides a step-by-step description of how a person of ordinary skill in the art may use it. It discloses the "unexpected[] discover[y] that the use of . . . polyethoxylated castor oils in [pharmaceutical] compositions," especially those "topically applied to the eye," "enhances the chemical stability of prostaglandins." '287 patent col. 1 ll. 46-51; col. 6 l. 16-col. 7 l. 25. It provides exemplary formulations that embody the claimed invention, reciting concentrations of every ingredient. Id. col. 7 ll. 26-46. It also discloses data generated by the inventor from accelerated stability testing showing the effect of PECO and prostaglandin concentration on stability and comparing the effect of PECO to that of a more commonly used surfactant, polysorbate 80. Id. figs. 2 & 3, col. 1 ll. 59-62, col. 8 ll. 32-39. The patent also describes various classes of prostaglandins to which the invention was understood to relate, which are covered by the term "prostaglandin" under the district court's construction of that term, as well as preferred concentrations and thirty-two specifically preferred examples of those prostaglandins. Id. col. 2 l. 23-col. [**25] 6 l. 15. It describes various types of PECOs that may be used in the invention, again with preferred types and concentrations. Id. col. 2 ll. 7-21. And the patent describes the various formulation parameters, including osmolality and pH, that may be selected when practicing the invention. Id. col. 7 ll. 8-14.
--

There is a law review article by Lea Shaver, Illuminating Innovation: From Patent Racing to Patent War, 69 Wash & Lee L. Rev. 1891 (2012) that sides with Lemley in the matter disputed with Howells and Katznelson.

As to set-up in the Shaver article:

In case after case, Lemley's article illustrates that multiple inventors working on the same technological problem have arrived at the same solution at nearly the same time. n70 The archetypal case here is the telephone: Alexander Graham Bell and Elisha Gray reportedly filed their competing [p. 1914] patent applications on the very same day. n71 Simultaneous invention may also take a less obvious form, wherein a single product builds on incremental inventive contributions by so many different parties that it truly has no identifiable inventor. n72

As to factual matters, Bell filed a patent application, which had been in the works for some time, while Gray filed a caveat, which had been recently created. Invited to file an application by the US Patent Office, Gray declined and left priority to Bell. Western Union (of which Gray was a co-founder), aligned with Thomas Edison, fought Bell in the courts.

Yes, Shaver mentions the light bulb:

The Myth of the Sole Inventor actually includes the light bulb among its historical examples of simultaneous invention, along the incremental model. n78 Lemley correctly characterizes Edison's [p. 1915] inventive contribution as "an incremental one: one in a long chain of improvements." n79 Indeed, the contributions of Edison's research team took the form of a chain of improvements as well, with multiple patents filed on various aspects of the light bulb and its related technology as they were developed, ultimately building a robust patent portfolio surrounding electric light technology. A closer look at the development of the incandescent light bulb reveals strong support for some aspects of patent racing theory, and also suggests ways in which the framework requires complication and revision.

Shaver mentions Sawyer and Man:

The leading American competition was the Sawyer-Man team. n94 William Sawyer was a journalist turned inventor funded primarily by New York lawyer Albon Man, who organized the Electro-Dynamic Light Company for this purpose.

As to Howells and Katznelson, Shaver writes:

My own examination of the light bulb case puts me on the side of Lemley rather than his critics. The central mistake made by Howells and Katznelson is to treat judicial opinions and patent claims as reliable evidence of who really did what. n115 These legal documents emphatically assert that Edison's inventive contributions were without peer. Such assertions, however, should be treated with great skepticism. The historical claims about Edison's contributions, which Howells and Katznelson present as fact, are better understood as a deeply mythologized "narrative of invention" that Edison himself forged in preparation for litigation. n116 The model of incremental innovation more accurately fits the true history of the light bulb's development.

It is admitted that the lamp described in the Sawyer and Man patent is no longer in use, and was never a commercial success; that it does not embody the principle of high resistance with a small illuminating surface; that it does not have the filament burner of the modern incandescent lamp; that the lamp chamber is defective, and that the lamp manufactured by the complainant and put upon the market is substantially the Edison lamp; but it is said that, in the conductor used by Edison, (a particular part of the stem of the bamboo lying directly beneath the silicious cuticle, the peculiar fitness for which purpose was undoubtedly discovered by him,) he made use of a fibrous or textile material, covered by the patent to [p. 472] Sawyer and Man, and is, therefore, an infringer. It was admitted, however, that the third claim -- for a conductor of carbonized paper -- was not infringed.

The relevant Sawyer/Man claims were found indefinite, and the Supreme Court never explicitly established priority of invention. The key insight of Edison was of a high resistance filament, thereby allowing low current consumption, was never understood by Sawyer and Man.

In passing, platinum filaments had been tried before Edison, AND light bulbs came to be filled by inert gas, not vacuum. Although Edison is credited as discoverer of the "Edison effect," he missed out on the opportunity for the diode.

Monday, March 14, 2016

Cuozzo at the Supreme Court; what are the correct numbers for IPRs?

Oral arguments for Cuozzo at the Supreme Court are set for April 25, 2016.

Within a legalnewsline post, one has the text

Applegate, in a recent blog post, points to Cuozzo’s opening petition to the Supreme Court, which notes that IPRs filed since the AIA’s effective date have yielded an “unexpectedly high” rate of patent claim cancellation.

Of the more than 3,400 IPR petitions filed since the AIA’s inception, as of Oct. 6, 2015, nearly 85 percent have resulted in cancellation of some or all the claims under review.

CAFC in Halo Creative: It is particularly important that a forum non conveniens movant demonstrate the adequacy of an alternative forum when the dispute implicates the enforcement of intellectual property rights

Of the background of the case:

Halo Creative & Design Ltd., Halo Trademarks Ltd.,
and Halo Americas Ltd. (collectively, “Halo”), own two
U.S. design patents, thirteen U.S. copyrights, and one
U.S. common law trademark relating to twenty-five of
their furniture designs. Halo is located in Hong Kong.
Halo sued Comptoir Des Indes, Inc. (“Comptoir”), a Canadian
company, and its CEO, David Ouaknine (collectively,
“appellees”), a Canadian resident, in the Northern District
of Illinois. Halo asserted that appellees infringed
their intellectual property and violated Illinois consumer
fraud and deceptive business practices statutes.
Appellees moved to dismiss on forum non conveniens
grounds, contending that the Federal Court of Canada
would be a superior forum. The district court granted the
motion and dismissed the case. Halo Creative & Design
Ltd. v. Comptoir Des Indes, Inc., No. 14C8196, 2015 WL
426277, at *3 (N.D. Ill. Jan. 29, 2015) (“Halo”). Halo
appeals. We reverse and remand for further proceedings

(...)

The district court concluded that Canada would be an
adequate forum. It explained that Halo could seek relief
for its copyright claims under Canadian law, because
Canada, Hong Kong, and the United States are all signatories
of the Berne Convention. Further, even though
there was no evidence that the Canadian courts would
apply United States law, the court reasoned that “the
United States has recognized the potential of applying the
copyright laws of other nations and perhaps Canada could
do likewise.” Halo, 2015 WL 426277, at *2. The court did
not address Halo’s design patent, trademark, or state law
allegations.

As to law:

The doctrine of forum non conveniens has a long
history. Although transfer between federal courts was
codified in 28 U.S.C. § 1404(a), forum non conveniens
concerning foreign and state venues has always been a
common-law doctrine. Piper Aircraft, 454 U.S. at 253;
14D Charles Alan Wright et al., Federal Practice and
Procedure § 3828 (4th ed.). In 1947, the Supreme Court
recognized that the doctrine applies to suits in federal
district court in Gulf Oil Corp. v. Gilbert, 330 U.S. 501,
507 (1947), and Koster v. (American) Lumbermens Mutual
Casualty Co., 330 U.S. 518, 526 (1947). Forum non conveniens,
the Court explained, allows a federal district
court to dismiss a suit over which it would normally have
jurisdiction if trial in a foreign forum would “best serve
the convenience of the parties and the ends of justice.”
Koster, 330 U.S. at 527.

Of analysis

There is no evidence in the record that any act of alleged
infringement occurred in Canada.6 There is no
evidence that appellees’ furniture is designed in Canada,
or that the allegedly infringing furniture was shipped
through Canada to the United States after manufacture
in Asia. It is undisputed that the only evidence of any
connection to Canada in the record is that appellees have
their principal place of business there. But this fact alone
cannot suffice. The question is whether the Federal Court
of Canada could provide “some potential avenue for ...

(...)

Second, the district court explained that “the United
States has recognized the potential of applying the copyright
laws of other nations and perhaps Canada could do
likewise.” Halo, 2015 WL 426277, at *2. But this is mere
speculation as to what the Canadian courts would do.
The district court cited no support for the proposition that
a Canadian court could or would apply United States
copyright law, or, for that matter, patent or trademark
law. Nor have appellees adduced any such evidence. On
appeal, appellees do not even argue that the Federal
Court of Canada would apply United States law. To the
contrary, it appears that the only intellectual property
law the Federal Court of Canada would apply is its own.

(...)

Thus, based on the evidence in the record, the Federal
Court of Canada would fail to provide any “potential
avenue for redress for the subject matter” of Halo’s dispute,
Stroitelstvo, 589 F.3d at 421, even with regard to
Halo’s claims of copyright infringement. The district
court abused its discretion in concluding otherwise.

About Me

I'm a patent lawyer located in central New Jersey. I have a J.D. from the University of Chicago and a Ph.D. from Stanford University, where I studied graphite intercalation compounds at the Center for Materials Research. I worked at Exxon Corporate Research in areas ranging from engine deposits through coal and petroleum to fullerenes. An article that I wrote in The Trademark Reporter, 1994, 84, 379-407 on color trademarks was cited by Supreme Court in Qualitex v. Jacobson, 514 US 159 (1995) and the methodology was adopted
in the Capri case in N.D. Ill. An article that I wrote on DNA profiling was cited by the Colorado Supreme Court (Shreck case) and a Florida appellate court (Brim case). I was interviewed by NHK-TV about the Jan-Hendrik Schon affair. I am developing ipABC, an entity that combines rigorous IP analytics with study of business models, to optimize utilization of intellectual property. I can be reached at C8AsF5 at yahoo.com.